national arbitration forum

 

DECISION

 

HBI Branded Apparel Enterprises, LLC and HBI Branded Apparel Limited, Inc. v. URDMC LLC

Claim Number: FA1012001361369

 

PARTIES

Complainant is HBI Branded Apparel Enterprises, LLC and HBI Branded Apparel Limited, Inc. (“Complainant”), represented by Melissa G. Ferrario of Womble Carlyle Sandridge & Rice, PLLC, North Carolina, USA.  Respondent is URDMC LLC (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <legshanesbali.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2010; the National Arbitration Forum received payment on December 3, 2010.

 

On December 8, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <legshanesbali.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@legshanesbali.com.  Also on December 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <legshanesbali.com> domain name is confusingly similar to Complainant’s L’EGGS, BALI, and HANES marks.

 

2.      Respondent does not have any rights or legitimate interests in the <legshanesbali.com> domain name.

 

3.      Respondent registered and used the <legshanesbali.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its L’EGGS (e.g., Reg. No. 891,626 issued August 8, 1969), BALI (e.g., Reg. No. 861,054 issued September 21, 1967), and HANES marks (e.g., Reg. No. 847,649 issued November 28, 1914).  Complainant is engaged in the manufacture, distribution, and sale of men’s, women’s, and children’s apparel.

 

Respondent registered the <legshanesbali.com> domain name on February 4, 2005.  Respondent uses the disputed domain name to host a website featuring hyperlinks to third-party competitors of Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Preliminary Issue: Cyberflying

 

While Complainant makes allegations that Respondent is not the correctly named Respondent, which is a result of actions conducted by a third-party constituting cyberflying, the Panel determines that there is insufficient evidence of cyberflying.  Therefore, the Panel chooses to proceed with this case involving Complainant and the named Respondent, URDMC LLC.

 

Identical and/or Confusingly Similar

 

Complainant holds multiple trademark registrations with the USPTO for its L’EGGS (e.g., Reg. No. 891,626 issued August 8, 1969), BALI (e.g., Reg. No. 861,054 issued September 21, 1967), and HANES marks (e.g., Reg. No. 847,649 issued November 28, 1914).  The Panel finds that such trademark registrations are sufficient to establish rights for Complainant in the L’EGGS, BALI, and HANES marks under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

Complainant contends that Respondent’s <legshanesbali.com> domain name is confusingly similar to Complainant’s L’EGGS, HANES, and BALI marks.  The disputed domain name combines all three of Complainant’s marks and simply removes the letter “g” and the apostrophe from Complainant’s L’EGGS mark before adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these additions fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Consequently, the Panel concludes that Respondent’s <legshanesbali.com> domain name is confusingly similar to Complainant’s L’EGGS, HANES, and BALI marks under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <legshanesbali.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <legshanesbali.com> domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant alleges that Respondent has no connection or affiliation with Complainant, and that Complainant has not consented to or licensed Respondent’s use of Complainant’s mark.  The WHOIS information identifies “URDMC LLC” as the domain name registrant.  The Panel fails to find any evidence presented by Respondent, or in the record, that would indicate that Respondent is commonly known by the <legshanesbali.com> domain name.  Therefore, the Panel determines that Respondent is not commonly known by the <legshanesbali.com> domain name pursuant to Policy ¶ 4(c)(i).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent uses the <legshanesbali.com> domain name to resolve to a website that contains hyperlinks to third-parties that sell competing apparel products.  Complainant alleges that Respondent commercially benefits from these hyperlinks by receiving click-through fees.  The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the disputed domain name to host hyperlinks to Complainant’s third-party competitors disrupts Complainant’s business.  The Panel agrees and determines that Respondent’s use of the <legshanesbali.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Respondent profits from its use of the <legshanesbali.com> domain name through the receipt of click-through fees from the aforementioned hyperlinks.  Internet users may become confused as to Complainant’s affiliation with the disputed domain name.  Respondent is attempting to profit from that confusion.  The Panel concludes that Respondent’s registration and use provide evidence of bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <legshanesbali.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 18, 2010

 

 

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